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March 09, 2017

Thales Visionix Inc. v. U.S. (Fed. Cir. 2017)

After the dark days of 2014 and 2015, in which exactly one Federal Circuit decision out of over twenty 35 U.S.C. § 101 challenges was found to meet the requirements of that part of the statute, we have seen clouds disperse to some extent. Last year, five out of twenty-one § 101 cases for which the Federal Circuit provided a full opinion resulted in the claims therein being deemed patent-eligible. And in 2017, we are off to a quick start so far, with this case being the second in which the Court has made such a determination.

The dispute here is over U.S. Patent No. 6,474,159, the independent claims of which recite:

1. A system for tracking the motion of an object relative to a moving reference frame, comprising: a first inertial sensor mounted on the tracked object; a second inertial sensor mounted on the moving reference frame; and an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

In the words of the Court, the '159 patent is directed to "an inertial tracking system for tracking the motion of an object relative to a moving reference frame." The reference frame is typically a starting point of the object's motion, and the inertial sensors (e.g., accelerometers and gyroscopes) allow tracking of the object in three-dimensional space with respect to that starting point. These systems, however, are subject to drift, in which small measurement errors accumulate into larger errors in estimates of the object's position. To accommodate, the systems periodically take measurements, by way of a secondary position-determining mechanism, that effectively resets the reference frame to the object's current position.

The claimed invention was motivated by the observation that inertial tracking of the position of an object on a moving platform (e.g., an aircraft) is inherently inaccurate in current systems where the secondary position-determining mechanism measures the object's position relative to the platform. Both the object's and the platform's inertial sensors track their respective motion relative to the reference frame of the earth, which leads to inaccuracies during error correction.

Unlike previous systems, the invention specifies that the "platform . . . inertial sensors directly measure the gravitational field in the platform frame," while the "object . . . inertial sensors then calculate position information relative to the frame of the moving platform." This allows one to determine the position of the object with respect to the platform, and does not require determining the position of the platform as it moves about.

Thales brought an action against the U.S. government and a government subcontractor in the U.S. Court of Federal Claims, contending that the helmet mounted display system in the F-35 Joint Strike Fighter infringes numerous claims of the '159 patent. The Claims Court found these claims ineligible for patenting under § 101, because they "(1) are directed to the abstract idea of using laws of nature governing motion to track two objects, and (2) provide no inventive concept beyond the abstract idea." Thales appealed.

The Federal Circuit began its substantive analysis with an overview of patentable subject matter law. In a nutshell, the Supreme Court's Alice Corp. Pty. Ltd. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter. One must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is not abstract.

The Court leaned heavily on Diamond v. Diehr as controlling precedent. In that case, the Supreme Court found claims to meet the requirements of § 101 despite inclusion of an abstract idea -- a mathematical formula. But the claimed invention in that case was eligible because it "described a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured—a result heretofore unknown in the art." Thus, the claims were directed to an improved technological process rather than just abstract math.

The Court found the clams of the '159 patent "nearly indistinguishable" from those of Diehr for purposes of the § 101 inquiry. While the former claims do not explicitly recite mathematical formulas, the Court found that the invention relies upon underlying equations that are derived from the specific arrangement of sensors as recited. Furthermore, "the equations—dictated by the placement of the inertial sensors and application of laws of physics—serve only to tabulate the position and orientation information in this configuration." Like the advances of Diehr, "the claims here result in a system that reduces errors in an inertial system that tracks an object on a moving platform." The Court expounded upon these improvements, heavily referencing the specification of the '159 patent when doing so.

Ultimately, the Court concluded that "the claims are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame." In the Court's view, the invention applied laws of physics to solve this problem, and the mere presence of a mathematical equation in the solution "does not doom the claims to abstraction." Therefore, the claims are not directed to an abstract idea, and the Court did not have to proceed to part two of Alice.

This case is similar to Amdocs (Israel) Limited v. Openet Telecom, Inc., where the Federal Circuit found patent-eligibility in broadly-drafted claims. Notable in both cases is that the Court's reasoning depended greatly on the improvements engendered by the inventions, as described in their respective specifications. This, of course, reiterates what many of us have been expounding for the last few years -- when drafting a software or business method patent application post-Alice it can pay off to clearly define the problem being solved, as well as how the solution improves upon previous approaches. Not unlike Amdocs, this case is more evolutionary than revolutionary, but at least it reflects a consistent line of reasoning coming from the Federal Circuit.

Comments

Hey Michael,

Every time I hear a court say what the claimed invention is "directed to," it's like someone scratching a chalkboard with their fingernails. 35 USC 112 says in explicit terms that the invention is that which is defined by the inventor in the claims, and all the language in it. SCOTUS should frankly be ashamed for ever having created this preposterous, nonsensical and broken Mayo/Alice framework.

Michael, your final point is well made and of course, very much in line with how the EPO have viewed inventions. At the risk of sounding, perhaps a little prim, I think that if you cant define what problem your invention sets out to solve and just how it does that, then its hard to understand why you think you have an invention.

The claim recites "an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors." In other words the claim recites the result or benefit achieved without reciting any structure or arrangement that enables the benefit to be achieved.

Such broad generality accords neither with the holding in Burr nor with the holding in Corning. It is therefore strongly arguable that the claim recites insufficient structure to properly fall within the "machine" category.

The courts have become so obsessed with the Mayo/Alice framework that they forget essentials.